DECISION

 

Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. v. MIGUEL PENA

Claim Number: FA1706001735344

PARTIES

Complainant is Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. (“Complainant”), represented by Charbel Bechelani, Mexico.  Respondent is MIGUEL PENA (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vidanta-group.com>, registered with eNom, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 9, 2017; the Forum received payment on June 9, 2017.

 

On June 12, 2017, eNom, LLC confirmed by e-mail to the Forum that the <vidanta-group.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name.  eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@vidanta-group.com.  Also on June 16, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name(s) be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Grupo Vidanta, is a luxury resort developer in Latin America and has been operating in the hospitality business for over 40 years. See Compl., at Attached Ex. A. Complainant has rights in the VIDANTA mark through registration with the Mexican Institute of Industrial Property

(“MIIP”) (e.g. Reg. No. 1,082,320, registered Jan. 7, 2009). See Compl., at Attached Ex. C (Schedule of Complainant’s trademark registrations). Respondent’s <vidanta-group.com> domain name is confusingly similar to Complainant’s mark because it simply modifies the term “GRUPO” to the English translation, “GROUP” and appends the generic top-level domain

 (“gTLD”) to a rearranged and hyphenated version of Complainant’s mark.

2.    Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its VIDANTA mark in any fashion and Respondent is not commonly known by any of the disputed domain names. Respondent attempts to conceal its true identity by engaging a privacy service as well as purporting to be an employee of Complainant. See Compl., at Attached Annex D, G (WHOIS information for the disputed domain names). Further, Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) as <vidanta-group.com> resolves to an inactively held website. Respondent uses the domain name in connection with a phishing scheme.

3.    Respondent registered and uses the disputed domain names in bad faith. Respondent engaged in a pattern of bad faith registrations. Respondent attempts to disrupt the business of Complainant by diverting Complainant’s customers to Respondent’s fraudulent business purporting to be affiliated with Complainant. The disputed domain name resolves to an inactive website and is used to administer a phishing scheme. Respondent had actual knowledge of Complainant’s rights in the VIDANTA mark. Respondent used a privacy shield to register the disputed domain name.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <vidanta-group.com> domain name is confusingly similar to Complainant’s VIDANTA mark.

2.    Respondent does not have any rights or legitimate interests in the <vidanta-group.com> domain name.

3.    Respondent registered or used the <vidanta-group.com> domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)

(“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant contends it registered its VIDANTA mark through registration with the MIIP (e.g. Reg. No. 1,082,320, registered Jan. 7, 2009), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. C. A registration with the MIIP confers rights in a mark. See Teck Res. Ltd. v. Amexa Ltda., FA 1420960 (Forum Jan. 27, 2012) (finding that a trademark registration with the MIIP was sufficient to establish rights in a mark under Policy ¶ 4(a)(i)). Thus, the Panel holds that Complainant has rights in the VIDANTA mark under Policy ¶ 4(a)(i).

 

Next, Complainant asserts that <vidanta-group.com> is confusingly similar to Complainant’s VIDANTA mark because it merely appends a hyphen, the term “GROUP” and the gTLD “.com” to the fully incorporated mark. The Panel notes that the term “group” is the English translation of the Spanish word “grupo.” The addition of a descriptive term, hyphen and a gTLD are insufficient to negate confusing similarity. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel holds that <vidanta-group.com> is confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)

(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain

names.”).

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts it has not licensed or otherwise authorized Respondent to use its VIDANTA mark in any fashion. A lack of evidence in the record that a respondent was authorized to use a complainant’s mark can be evidence that a respondent is not commonly known by a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name especially where a privacy service has been engaged. The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record lists “WHOISGUARD PROTECTED”, as the registrant prior to the lifting of the privacy services, and “MIGUEL PENA” as the registrant after the privacy services were lifted. See Compl., at Attached EX. G. Therefore, the Panel holds that Respondent is not commonly known by <vidanta-group.com>  per Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the resolving webpage is inactive. Inactive holding does not constitute bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Complainant has provided a screenshot of Respondent’s inactive website. Comp., at Attached Ex. E (Screenshots of the <vidanta-group.com> resolving website). Therefore, the Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent has a engaged in a pattern of bad faith registration and use and may be connected to other email phishing schemes targeting Complainant’s customers. Complainant asserts that it has succeeded in a number of UDRP proceedings recently that involved similar facts and an identical email scam. See, e.g., Desarrollo Marina Vallarta, S.A. DE C.V. v. Hector Rangel, Case No. D2015-2279 (WIPO Feb. 5, 2016); see also Desarrollo Marina Vallarta, S.A. de C.V. v. Luis Bonequi, Case No. D2015-1578 (WIPO Oct. 25, 2015). While the respondents in the enumerated cases initially do not appear to be the Respondent in this case, the Panel notes that the previous cases involved a respondent who utilized a WHOIS privacy service and provided false WHOIS information, much the same as the Respondent in this case. See Compl., at Attached Ex. G . The Panel agrees that Respondent has a history of bad faith registrations, and the Panel holds that such information evinces bad faith in the present case. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). 

 

Complainant contends that Respondent is using the <vidanta-group.com> domain name to divert Complainant’s customers away from Complainant’s legitimate hospitality business to Respondent’s scam. Disrupting a competitor’s business through diversion is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005)

(“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, the Panel notes that Complainant provided email correspondence between Respondent posing as Complainant’s affiliate and an Internet user hoping to partake in Complainant’s business. See Compl., at Attached Ex. D. Therefore, the Panel holds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii).

 

Next, Complainant argues Respondent intentionally attracted Internet users from Complainant’s site to Respondent’s site for Respondent’s commercial gain. Use of a disputed domain name to create a likelihood of confusion as to the source and affiliation of a respondent evinces a finding of bad faith per Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Here, Respondent fully incorporates Complainant’s mark to lend authenticity to Respondent’s fraudulent phishing emails. See Compl., at Attached Ex. D. As such, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant contends that Respondent is using the disputed domain name in connection with a phishing scheme. Phishing for Internet user’s information under the guise of an affiliate of a complainant is evidence of bad faith under Policy ¶ 4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Complainant has provided email correspondence containing evidence of Respondent’s attempts to phish for Complainant’s customers’ personal banking information and beyond. See Compl., at Attached Ex. D. Respondent lures the customers into wiring a large  “maintenance fee” on the promise that the customer will receive commission on a rental property fraudulently associated with Complainant’s company. Id. However, Respondent is not actually associated with Complainant and is receiving funds and information from unsuspecting victims. Specifically, a victim was phished by Respondent for over $48,700. Id. On this evidence, the Panel finds that Respondent engaged in a phishing scheme and, therefore, acted in bad faith under Policy ¶ 4(a)(iii).

 

Complainant also contends that in light of the fame and notoriety of Complainant’s VIDANTA mark, it is inconceivable that Respondent could have registered the <vidanta-group.com> domain name without actual knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (FORUM Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s VIDANTA mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 1974. See Compl., at Attached Ex. A. Therefore, due to the fame of Complainant’s mark, and Respondent’s attempts to impersonate Complainant, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <vidanta-group.com> was registered and subsequently used.

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <vidanta-group.com> domain name be TRANSFERRED from Respondent to Complainant.

 

                                                                                                                              John J. Upchurch, Panelist                                                                                                                       Dated:  July 24, 2017